29 December, 2015

A Rosey Future Ahead? - EU Commission Addresses Copyright for 2016

As the year is nearly coming to a close, this writer thought it would be pertinent to set our sights for the coming year. 2016 will hopefully be one of further advancement, change and full of cases detailing the law in more intricate, nuanced and better ways. It is always interesting to get perspectives on future changes from the legislature, and such thoughts were shared by the EU Commission and its initiatives on copyright for copyright.

A more modern, more European copyright framework

The framework where copyright operates has gone through a massive sea of changes, not only in terms of the media covered and people's interaction with that media, but also the technological advancements that have effectively redefined human interaction, media consumption and our perception of the world. With this change a strong, but malleable approach to reform would need to be adopted, and as countries have taken their steps towards a newer copyright regime, a EU-centric change was also needed. The EU Commission, as stated above, has brought forth several points of reform, introduced in their press release only a handful of days ago, aiming to modernise the copyright rules in the Union.

Widening access to content across the EU

The Commission envisions the enablement of EU citizens to take their paid-for (or subscribed-to) content with them in the Union, or as the press release states: "[the] aim[] [is] to allow a better circulation of content, offer more choice to Europeans, to strengthen cultural diversity and provide more opportunities for the creative sector". Arguably this would be a tremendous improvement and a move for the harmonization of copyright within the EU, accessibility to content, and to expand the markets beyond their respective national borders.

This, per the proposal released some time ago, would be achieved through an obligation on Member States to enable their citizens to access online content services (defined the same as in Directive 2010/13/EU or as a service, both paid for or not, whose main feature is the provision of access and use of copyright works) when they are temporarily out of the country the service originally is provided.

How this is implemented in each Member State, and whether any restrictions will be added to post-proposal, will remain to be seen, but this writer believes this would be a huge leap forward in harmonizing the internal market, and to enable paying customers to access the services and/or content they have duly paid for.

Exceptions to copyright and creating a fairer marketplace

The Commission also sets out an intent to assess the exceptions that apply to copyright protected works, specifically in relation to education, research (data mining, specifically) and the use of such works by disabled individuals. They also aim to provide further clarity to the legal standing of images uploaded by internet users of monuments (this issue discussed more here).

It was the day that Sally had foreseen, and was dreading, all along
It is hard to say what the Commission is set to change or clarify, but this writer will express his concern for the latter point on images featuring monuments and their possible status as infringing or non-infringing works. The spread and dissemination of information is important, as well as individual expression through photographical works, and the dissuasion or illegality of such expression would be worrisome.

The Commission also wants to tackle the remuneration of content creators in the online sphere, specifically in relation to news aggregators, and will "...analyse whether solutions are needed at EU level to increase legal certainty, transparency and balance in the system that governs the remuneration of authors and performers in the EU, taking EU and national competences into account".

This was addressed in more detail in their communication as an examination of "...whether action is needed on the definition of the rights of ‘communication to the public’ and of ‘making available’... [and] whether any action specific to news aggregators is needed, including intervening on rights". This area of the law is still quite murky, and further clarification and potential legislation might be needed to balance the current arguable free-for-all in the online space regarding news aggregation.

Fighting piracy

Finally, the Commission wants to go further in the enforcement of copyright against possible pirates, engaging in a public consultation on the matter with all stake-holders (focusing on the efficacy of Directive 2004/48/EC). Additionally it will include considerations on "...how to make the removal of illegal content by online intermediaries more efficient".

Their objective is clearly a 'follow-the-money' approach, however a strict, DMCA style weaponry could leave legitimate entities and/or fair dealing without proper protection. As their communication states: "...the Commission will assess options and consider by autumn 2016 the need to amend the legal framework focussing on commercial-scale infringements, inter alia to clarify, as appropriate, the rules for identifying infringers, the application of provisional and precautionary measures and injunctions and their cross-border effect, the calculation and allocation of damages and legal costs".

This writer hopes that the review process proposed by the Commission above remains fair and balanced, and remains hopeful things will be fine down the line. Nevertheless, 2016 should be an exciting time for copyright, and we will all undoubtedly stay interested in the proposed regulations that will be put forth.

Source: IPKat  

08 December, 2015

The Origin of IP - Historical Protection of Intellectual Property

The protection of your rights through intellectual property law is not by any means a modern-day quirk, stemming from hundreds of years of (varying levels of) protection or acknowledgement. Many of us who work with IP within the common law are more than familiar with the Statute of Anne in 1709, which offered the predecessor to today's protection of copyright, and the 'renaissance' of monopolizing intellectual efforts outside of pure monetary exclusion, and the Statute of Monopolies a few decades before it. Even so, one could imagine that there would be more historical, potentially ancient considerations containing IP protection, which begs the question: where are the historical origins of IP protection?


As said above, the Statute of Anne was truly the first manifestation of the modern regime of copyright protection in the UK, and subsequently all over the common law, due to its wide-spread adoption within England's (former) colonies. However, the Statute was not the only incarnation of copyright protection in the world up till that date.

According to historical records, one of the first forms of protection for copyright works (as one could argue they were) was in 500 BC when chefs in Sybaris, a Greek colony in Italy, were afforded a monopoly for a year on the creation of specific recipes. Although, indirectly at least, copyright works, this suggests that it could be one of the first instances of copyright protection (more on which can be read here in a modern context). Similarly a few hundred years later, Vitruvius, a Roman author, successfully convicted some poets who had copied and passed off others' works as their own.

Some ancient thinkers were ahead of their time
Both the Romans and the Greeks, especially in the context of comedies, distinguished the appropriation and copying of works by other authors as theft ('furtum'). However, they still allowed for the compilation of two or more plays into one, and even criticism of other works, which were seen as corner-stones of the betterment of knowledge, science and overall the retention of intellectual output.

These examples do not showcase a concrete systematic protection of copyright during ancient times, but illustrates that, even though not protected by law, the unique expression of authors was seen as highly valuable and thus something worth protecting. One can imagine the roots of our current system stemming from ideologies that the Greeks and Romans held dear, and this writer, for one, would like to think this was one of the first steps into the foray of IP in human history.


Trademarks, as many of you will be aware, serve as an indicator of the origin and quality of goods and services, providing an observant consumer the goods and services they have duly paid for. The history of registered trademarks in the UK dates back to the 1800s, with Bass Brewery's iconic triangle being the very first one to be registered under the Trade Marks Registration Act 1875. Even so, our historical predecessors had already used trademarks to great effect before the Act's introduction.

In Ancient Egypt, Greece and Rome, potters often marked their pottery with distinctive signs (referred to as 'potter's marks'), showing who had made it, and undoubtedly, signalling the craftsmanship associated with that particular item and its maker (examples can be seen here). Although these marks did not serve the same purpose as modern trademarks do, one could argue that, even though they were not a legally protected badge of origin, they were akin to their modern counterparts. Seemingly these marks were never enforced, but one can imagine they potentially were a deciding factor for those who would purchase the items.


The more modern concept of patents derives itself from the 1470s, when the Italian City State of Venice granted 10 year patents to anyone who would make a new and ingenious contrivance in the city of Venice, and notified the State Judicial Office of their invention. The Statute of Monopolies 1623 followed some 150 years later, but the Venetian initiative paved the way for patents as we know it today.

The UK, however, was not entirely outdone by their Italian counterparts, and patents did exist before the enactment of the Statute of Monopolies. Letters of patents could be issued, and duly were, by the Monarchy, and one of the first recorded instances was in 1331. Although not only a way to protect inventions, also conveying monopolies in corporations, titles and other royal grants, they still illustrate the importance of inventions even over 100 years before the enactment of the Venetian patent law.


IP clearly has a long and colorful history, and this only highlights its importance not only in today's world, but for years to come. Whether you are a believer in the common ownership and free dissemination of information, or the protector of the monetary incentives many aspiring (and successful) artists, musicians, inventors and creators often need, you have to appreciate the value that IP gives to all of us. Without our Greek, Roman and Venetian predecessors, who knows what IP laws would look like today.

27 November, 2015

Copyright Calm - Yoga Poses Refused Copyright Protection in the US

Many in the legal community could benefit from more relaxation and meditation, and today's fitness culture harbors a great appreciation for activities like pilates and yoga. As many of you will be aware, yoga (and similar forms of exercise) are composed of a variety of poses and movements, allowing for the targeting of specific muscle groups and/or physical (and mental) benefits as a result. If the different poses and exercises were not enough to confuse many, there are several different styles of yoga, all encompassing different methodologies and exercises, such as Ashtanga and Hatha yoga, some of which have been developed fairly recently by modern yogis. One of these is Bikram Yoga, developed by Bikram Choudhury, comprising of 26 poses conducted in a hot, humid environment. As the style has been designed and 'created' by Mr. Choudhury, one could imagine the program or poses could be protected; a fact that Mr. Choudhury has vigorously asserted over the years. To that end, could a yoga pose or series of poses be protected by copyright?

The US Court of Appeals recently took this question on in the case of Bikram Yoga College of India v Evolution Yoga, LLC, which dealt with the aforementioned yoga style. Bikram Choudhury's version of Hatha yoga consists of 26 different 'asanas', or in other words, poses, and two breathing exercises, all collectively known as the Sequence. He also released a book called "Bikram's Beginning Yoga Class" in late the 1970s, and registering its with the US Copyright Office along with a 'compilation of exercises' some time later. The final chapter in the development of his yoga empire was the launch of a Bikram Yoga instructors course in the late 1990s, called the "Bikram Yoga Teacher Training Course", where individuals could learn the Sequence and the underlying philosophy of Bikram Yoga and instruct others in the same. In the early 2000s, Mark Frost and Zefea Samson participated in the course, and subsequently founded Evolution Yoga, where they taught, among other classes, "hot yoga", which was similar to Bikram's take on yoga. Mr. Choudhury subsequently took the two to court, alleging copyright infringement of his copyright protected works.

The case stems from the idea-expression dichotomy, which separates the protection of ideas without an expressive manifestation in a tangible form. The Court therefore had to assess whether the Sequence would amount to a mere idea, or whether it would be a form of expression protected by copyright.

Yoga isn't always all fun and stretches
Under 17 U.S.C. § 102(a), many different forms of works are covered by copyright; however subsection (b) specifically excludes protection from "...any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work". Judge Wardlaw, handing down the Court of Appeals' judgment, extensively considered precedent dealing with the Court's view on the division of ideas and expression. Baker v Selden, dealing with the protection (or lack thereof) for a book-keeping system, and Palmer v Braun, dealing with the protectability of meditation exercises, illustrate the unavailability of copyright protection for ideas, even if they are 'expressed' in some sort of tangible form.

Ultimately, the Sequence was deemed to be not protected by copyright. Even though Mr. Choudhury's Sequence promotes health and the development of human mental and physical well-being, the Court determined it fell short from copyright's remit. Judge Wardlaw did, however, remark that "...if it is entitled to protection at all, that protection is more properly sought through the patent process". The prevention of competition was also a consideration for the Court, as they saw that "[c]onsumers would have little reason to buy Choudhury's book if Choudhury held a monopoly on the practice of the very activity he sought to popularize. Rather than "stimulat[ing] artistic creativity for the general public good," copyright protection for the Sequence would prevent the public from engaging with... [the] idea and building upon it".

Mr. Choudhury also argued that the Sequence should be protected as a compilation work under 17 U.S.C. § 103. Judge Warlaw quickly rejected this argument, as, for a work to be awarded protection under section 103, it would first have to qualify as a protectable work under section 102; something that, as the above shows, it failed to do. The argument was based on Mr. Choudhury's arrangement and organization of the poses and exercises within the Sequence, but this still does not extend copyright to subject matter that it did not protect to begin with. This makes sense, as it seeks to prevent the protection of non-qualifying works, since the extension of compilation protection to works not covered by section 102 could open the floodgates for works not contemplated by the legislature in drafting the law.

Finally, the last argument dealt with by the Court was whether the Sequence would be protected as a choreographic work under 17 U.S.C. § 102(a)(4). Similarly to the above, the claim fails due to a lack of protection as a qualifying work under section 102 from the very beginning. As settled by Judge Wardlaw: "[e]ven if the Sequence could fit within some colloquial definitions of dance or choreography, it remains a process ineligible for copyright protection".

The case remains a novelty in the sphere of copyright, and offers very little that was not known already. Yet, it does highlight an important aspect of intellectual property law: the importance of picking your form of protection. Should Mr. Choudhury sought patent protection for the Sequence, he could have potentially used it to prevent others from using his Sequence, or teaching similar routines at non-affiliated yoga studios. Even so, he did not, and fell foul of copyright and its remit.

Source: JDSupra

18 November, 2015

Retrospective - Groundless Threats in Intellectual Property Law

A big aspect of intellectual property law is the possible threat of infringement, even when you might not know it. With strong legal protective measures comes a great deal of responsibility in wielding that capability, especially in the light of competition. IP can be used to stifle those aiming to compete with you, as well as those who blatantly want to benefit from your hard-work and intellectual output. A balance has to therefore be struck, and certain legal tethers have been placed to restrict the unwarranted use of IP rights without due cause. Groundless threat provisions exist in relation to all registrable IP rights (trademarks, patents and designs) under the Patents Act 1977Trade Marks Act 1994Registered Designs Act 1949 and Copyright, Designs and Patents Act 1988. What amounts to a groundless threat is not entirely clear under all of the provisions above (which act fairly similarly to each other), however the High Court endeavored to answer this at the cusp of the 21st century.

The case of Brain v Ingledew Brown Bennington & Garrett (No 3), decided in 1997, dealt with Patrick John Brain, who, in the early 90s, set up a consulting business in an effort to exploit new technologies and inventions all over the world, particularly in the Far East. Upon meeting Jørgen Jensen, the Head of Chemistry at Risø National Labratory (the second defendant), a Danish research company, the pair struck a deal to utilize a patented technology developed at Risø by a number of individuals called "Wet Oxdiation" (e.g. patents US5053142A and EP0284754) in foreign markets. The pair started a company called Intox Corporation Limited, and successfully marketed the process to a company in Canada, which included passing on technical documents attained by Mr. Jensen. Risø found out about Intox Corporations' activities, and initiated court proceedings against Mr. Jensen in Denmark. During the proceedings Risø also instructed UK lawyers, Ingledew Brown Bennington & Garrett, to pursue Intox Corporation. Mr. Brain argued that, in correspondence between him and lawyers at Ingledew, several threats were included, and as a result, the projects incorporating the above technology did not come to fruition, causing him a great deal of monetary loss. He then initiated proceedings for groundless threats under the Patents Act 1977.

Under the above Act, in section 70: "...a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may... bring proceedings in the court against the person making the threats".

Rory was aggrieved by threats made in relation to his cap
Justice Laddie, handing down the judgment of the High Court, had to therefore first determine whether Mr. Brain was a 'person aggrieved', allowing him to bring forth his claim. For a person to be considered as such there has to be clear damage, not just hurt feelings. As Justice Laddie described it: "...a trader's chosen route to exploitation of his product or process is interfered with by the threat, that is damage in the broad sense and makes him a person aggrieved". Reliance on the threat, and subsequent action causing detriment, is key, not just annoyance or mere displeasure. Even if loss is prevented or mitigated in the event of a threat does not mean the person cannot be seen as a person aggrieved. What the person has to show is "...that his commercial interests are or are likely to be adversely affected in a real as opposed to a fanciful or minimal way". The Court saw that, as the threats were made to Mr. Brain directly, that he would fall under the definition of a 'person aggrieved'.

Justice Laddie then had to assess what the meaning of the letters were, and whether they actually constituted a threat. This assessment has to be done "...in accordance with how they would be understood by an ordinary reader", and what the initial impression would be to a reasonable addressee. In the light of the three letters discussed as a whole, Justice Laddie saw that their purpose would be reasonably understood as a threat to initiate patent proceedings.

Arguments as to the available defence under section 70(4), preventing any proceedings under section 70 for "...a threat to bring proceedings for an infringement alleged to consist of making or importing
a product for disposal or of using a process" (defined in section 60), failed, as the correspondence targets a much broader base of infringement, not just the ones exempted under section 60. Justice Laddie found that the defendants had made groundless threats against Mr. Brain, and ordered an inquiry into damages.

The law in relation to groundless threats has since moved on, and more leeway has been given in terms of bringing information as to any existing IP rights to the attention of the potentially infringing party. The Patents Act 2004 made significant changes to section 70, however the above does still apply to all groundless threat cases, giving the courts the basis for their determination for a cause of action under these provisions.

11 November, 2015

Taking a Break - Kit Kat Decision Issued by ECJ

For all lovers of confectionery goods the name Kit Kat will undoubtedly be a familiar one, even without its highly memorably slogan. The iconic British chocolate bar has been around since the 1930s, and above all else what many will remember is its shape, comprising of five individual chocolate covered wafer 'fingers' connected at the base by a lawyer of chocolate. As such shapes can be protected through intellectual property law, but whether Kit Kat's design is truly distinctive enough to be protected as a trade mark, has been a contested question here in the UK for several years, ultimately being referred to the European Court of Justice by Justice Arnold nearly two years ago in Société Des Produits Nestlé SA v Cadbury UK Ltd [UK High Court of Chancery]. As a result the ECJ handed down its judgment in September this year.

The case of Société Des Produits Nestlé SA v Cadbury UK Ltd [European Court of Justice] dealt with an application for a trademark by Nestle for a three-dimensional representation of the Kit Kat bar, omitting the embossed words "Kit Kat" from the top of the chocolate bar's individual fingers. After the application's publication Cadbury submitted an opposition against its registration, arguing a lack of distinctive character, initially having the mark rejected by the UK Intellectual Property Office, ending in Nestle's appeal to the UK High Court.

Justice Arnold submitted three questions to the ECJ prior to his later judgment applying the Court's consideration.

The ECJ started by answering the second question posed by Justice Arnold. What was asked was seen as "...whether Article 3(1)(e) of Directive 2008/95... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result".

After a very brief consideration of precedent, especially relating to the prevention of any registration monopolizing a technical solution or functional characteristics, the Court determined that "...Article 3(1)(e)... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue". What remains key is the refusal of registration based on a single ground under Article 3(1)(e), even if, predominantly, the shape does not fall under all of the grounds. Public interest in the strict enforcement of the grounds of refusal was important in the Court's view, as a contrary position would allow for the monopolization of the very subject matter the Article seeks to disallow. What is uncertain is how this applies to a shape as whole and its respective components. Would a shape be negated as a whole if it contains a part that would fall under the grounds (negating the registrability of the whole design)? Arguably, this would be the case, but the decision leaves this unclear.

Terry's take on Halloween was more diabetes inducing
The Court then moved on to the third question, which it saw as asking "...whether Article 3(1)(e)(ii)... under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function or whether it also applies to the manner in which they are manufactured". As the wording of the sub-section does not discuss the manner of manufacture for the goods, the Court had to decide whether it implicitly does so. They quickly decided against this, setting out that "...that Article 3(1)(e)(ii)... must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured". The inclusion of manufacturing methods, in this writer's mind, would encroach onto the territory of patents, and how a product is made does not designate its origin; the primary function of trademarks.

Finally, the Court proceeded to question one, which was set out as "...whether an applicant to register a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or whether it is sufficient for that applicant to prove that a significant proportion of the relevant class of persons recognise that mark and associate it with the applicant’s goods".

Again, considering precedent in brevity, the Court saw that "...in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company". What the question therefore requires is that the proprietor of the mark has to prove that the relevant class of people perceive their mark, in this case "Kit Kat", to only originate from them and not other proprietors selling similar goods, even if the goods contain other registered trademarks (or a design, in this case). The onus would be on Nestle to show that the shape of the chocolate bar, regardless of the inclusion of the words "Kit Kat", would be indicative of the source of the bar by itself (i.e. a distinctive feature). The Court did omit Justice Arnold's question on reliance on the mark, focusing on their 'perception' and 'recognition' of the mark. Arguably reliance does not necessarily follow the two, but this writer thinks, in the Court's mind, their intention is to include reliance through perception, as seeing and knowing a mark in conjunction with another would still carry some weight in the purchase decision, effectively creating a level of 'reliance'.

The case has since been referred back to the High Court for ultimate decision, but this writer thinks, based on earlier considerations, that the shape of the Kit Kat bar might not be enough to distinguish it from other similar ones to allow for the registration of the mark. The ECJ's answers to the questions seemed unsurprising, however leaving many things uncertain or somewhat unanswered, but give more nuanced guidance, which is never too abundant in today's legal sphere. How the case will be applied in the future is uncertain, but hopefully this application will manifest even more clarity as a result.

Source: IPKat

04 November, 2015

Genes Lost - Myriad Genetics Loses in the Australian High Court

The Myriad Genetics saga has been going on for several years now in the Land Down Under, and this writer has been waiting for the Australian High Court decision with bated breath. After a ruling in both the Federal Court and the Full Federal Court (more on which can be found here) in favor of Myriad Genetics, the cause seemed all but lost to the appellant, Yvonne D'Arcy. She was awarded the right to appeal to the High Court of Australia, who handed their judgment down only last month.

Although the case has been discussed on this blog before, some exposition is needed for those who might not be wholly familiar with the matter. The case of D'Arcy v Myriad Genetics dealt with the protein BRCA1; one that is quite relevant as a marker for a potential heightened risk for breast and ovarian cancer should it possess a mutation within it. Myriad Genetics acquired a patent for the sequence's isolation and subsequent analysis (Australian patent no. 686004), which was challenged by Yvonne D'Arcy, a cancer patient herself, in 2013.

What the High Court had to consider was whether the patent can be defined as a 'manner of manufacture' under the Statute of Monopolies 1623; a requirement for patentability under the Australian Patents Act 1990.

Genes are not that important
In a lengthy, multi-opinion decision, the High Court unanimously decided that the disputed claims of the patent were not a 'manner of manufacture', and thus were not patentable. Discussing the science and precedent, the majority still focused on the substance of the patent in in-depth detail. What Myriad Genetics argued, and the preceding judges agreed with, was that the isolation of the genetic sequence, and its analysis, created an artificial state of affairs, changing what is in simplistic terms a natural phenomenon into a man-made substance falling under the definition of a 'manner of manufacture'. The majority disagreed, and saw that "...the information stored in the sequence of nucleotides coding for the mutated or polymorphic BRCA1 polypeptide is the same information as that contained in the DNA of the person from which the nucleic acid was isolated. It is the existence of that information which is an essential element of the invention as claimed. The product is the medium in which that information resides". In the majority's view the isolation of the genetic content retains the very same information as occurs naturally within that person, adding or 'making' nothing new. Myriad Genetics' claims honed on the information within the genetic sequence, and not the chemical changes made to it when isolating, falling foul of a 'manner of manufacture' as a result, attempting to claim what already exists through nature (echoing, and accepting, the position by the US Supreme Court, more on which can be found here).

Ultimately what befell Myriad Genetics' case was the language used in the patent's claims, as stated by the majority: "Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic acids, embodies a product created by human action, that is not sufficient to support its characterisation as a manner of manufacture. The substance of the invention as claimed and the considerations flowing from its substance militate against that characterisation". As such the High Court allowed the appeal by Ms. D'Arcy.

The complexity and uncertainty around the case is evidenced by the length and multitude of opinions, and even though the decision was unanimous in allowing the appeal, the opinions reflect different approaches in arriving in the same answer. To this writer the focus seems to be very language specific, and had Myriad Genetics differentiated their claims through more specific, composition-heavy language, they could have been successful. Nevertheless, the case was more of a point of principle, as the patent expired only a few months ago, but it does set a precedent for the genetics industry in Australia. The Australian government has given guidance on proper practice in relation to genetic materials and patents, which looks gloomy for the industry, but the consultation does allow for comments and thoughts going forward.

Source: ABC Online 

28 October, 2015

Impulsive Decisions - Reputation of a Trademark in Europe

In the world of trademarks the goodwill, or in other words reputation, of goods and services is paramount for their protection and enjoyment in a relevant territory. As commerce has become more and more global, with other territories seeing goods or services after their introduction to others, jurisdictional issues are even more poignant and relevant, providing a judicial headache for many attempting to benefit from those limitations (for example, in the recent NOW TV case, discussed here). Community Trade Marks, or CTMs for short, are registered as European-wide trademarks, but the goods or services' introduction to all of the Member States can sometimes differ, and potentially leave their registration open to challenge. Could, however, a proprietor prove goodwill in a Member State through use in other Member States, without actually having a commercial presence for that item in the Member State in question? Luckily, the European Court of Justice answered this question over a month ago.

The case of Iron & Smith v Unilever dealt with a national application for the mark "be Impulsive" in Hungary, lodged by Iron & Smith. The application was challenged by Unilever on he basis of their earlier mark "IMPULSE" (CTM 3116233); however they failed to demonstrate goodwill in Hungary, although Unilever had done so, arguably at least, in the UK and Italy.

The Court was asked four questions, the first three of which were distilled down by the Court as "...what conditions, in circumstances such as those at issue in the main proceedings, are to be met in order for a Community mark to be regarded as having a reputation in the European Union, pursuant to Article 4(3) of Directive 2008/95".

Extending beyond one's limitations can be a good thing
After a brief consideration of precedent relating to goodwill the Court quickly saw that "...if the reputation of an earlier Community mark is established in a substantial part of the territory of the European Union, which may, in some circumstances, coincide with the territory of a single Member State, which does not have to be the State in which the application for the later national mark was filed, it must be held that that mark has a reputation in the European Union". What this means is that you don't have to prove reputation all over Europe, but only in a substantial part of it (how ever that might be defined), in order to establish reputation in any Member State. This is a curious finding, as not all nationals of all Member States are aware of goods or services elsewhere in the Union, and effectively creates goodwill in those that have not, and might never, see those goods or services.

The final remaining question for the Court was also put in very succinct terms: "...in what circumstances Article 4(3)... is applicable if the earlier Community trade mark has already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which the registration of the later national mark concerned by the opposition has been applied for".

The Court, again, briefly considered earlier decisions, and concluded that "...if the earlier Community trade mark has already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, the proprietor of the Community trade mark may benefit from the protection introduced by Article 4(3)... where it is shown that a commercially significant part of that public is familiar with that mark, makes a connection between it and the later national mark, and that there is, taking account of all the relevant factors in the case, either actual and present injury to its mark, for the purposes of that provision or, failing that, a serious risk that such injury may occur in the future". The answer relates heavily to the above, as if goodwill is proved in a significant part of the Union, it is possible to rely on a CTM to invalidate a national mark, provided there is actual or potential damage to the CTM or its owner if the national mark were to be registered.

Overall the decision of the Court seems odd, effectively creating goodwill where none have existed in evidential terms, but aligns itself with earlier precedent. To prove goodwill or reputation in any European Member State one only has to prove it in a 'significant' portion of the European Union, which, to this writer's mind, expands the remit of an unused CTM beyond that for which it is intended (even if the mark is registered in the whole of Europe). Although the Court's rationale aligns itself with earlier decisions, it seems to give rights where no rights existed, potentially even hindering legitimate competition. Nevertheless, this writer will not purport himself to know better than the judges at the Court, but is puzzled by this outcome nonetheless.

Source: IPKat 

22 October, 2015

Knowledge for All - Google Books is Fair Use

Information, and access to it, is an incredibly powerful tool to create progression, social mobility and to affect even the biggest nations in wondrous ways. True or not, this writer is a firm believer in the dissemination and sharing of knowledge (even through blogging), and many initiatives have strived to give access to knowledge and information to those who cannot do so themselves. One such initiative is Google Books (in some ways), although clearly still laced with the sub-text of corporate gain, allowing for "...people everywhere [to be] able to search through all of the world’s books to find the ones they’re looking for". By no means altruistic, yet quite useful, the project aims to scan all of the world's books into one database, using it to allow people to find information quickly, effectively and inter-connectively (this writer notes this is not a sales pitch, even if it sounds like one). The project came under fire some time ago, prevailing initially, but the case since moved on to the US Court of Appeals, which handed down its judgment only last week.

To give this story some color, the case of Authors Guild v Google Inc dealt with the aforementioned project, where snippets of books (in image form or not) are presented to a user who searches the database for a word, phrase or sentence, with the results containing one or more instances of the search terms used in brief context. Some participating research libraries have also allowed Google to retain digital copies of some works under strict contractual terms. The Authors Guild did not accept this use of its authors' works (many of which act as plaintiffs in the matter), and took Google to court for copyright infringement.

The crux of the case lied in whether Google's use in the provision of its snippets and its search facility in seeking out the relevant content in the books amounted to fair use under 17 USC section 107 (and the four factors used to assess whether a use of a work amounts to fair use). The Court of Appeals proceeded, therefore, to apply the four factors of fair use to Google's service.

Gary struggled to find what he was looking for.
If only there was a better way...
The first factor looks at what the purpose and character of the secondary use of the work was, i.e. whether Google's use of the copyright protected works was in any way 'transformative'. The Court quickly saw that Google's search capability was highly transformative, as "...the purpose of Google's copying of the... books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it. In addition, through the ngrams tool, Google allows readers to learn the frequency of usage of selected words in the aggregate corpus of published books in different historical periods". What Google's service allows for users to do is very different than the character and purpose of the books themselves, making their use of the works quite transformative. They also saw that the snippets added something more to the search function, and is in itself also transformative, allowing for a more in-depth assessment of context and relevance when searching for information to the user. Google's commercial motivation did not negate this finding.

The Court determined, briefly, that the second factor (nature of the protected work) played very little part in the assessment of fair use.

When looking at the third factor (the amount and substantiality of what was copied), Judge Leval, handing down the majority's judgment, determined that as no full copies were made available to the public by Google of the scanned books, the search function did not copy a substantial amount. The snippets shown in the results did not, in Judge Level's mind, give enough material to the reader to substitute the protected works, as only very small amounts of text are revealed to each individual user.

Judge Leval finally looked at the fourth factor, assessing the effect of the works' use upon the potential market for or value of the copyrighted works. Although the Court did recognize that there could be an impact on the works or their potential market, albeit a small one, it still had to be "...a meaningful or significant effect" for there to be an issue under the fourth factor. Even if the snippets display some facts or information, and thus detract from a need to purchase the works, they still offer very little in the form of a substitute to the original works and would not cause much of an impact in the works' potential market.

Google's Books project was therefore deemed to fall under fair use.

What the decision in hand showed us is a clear need for there to be more direct interference in an author's use of a work, and their monetary gain from it through its intended purpose (loosely said, at least). What Google created was a tool, not a substitute, that by no means superseded the original works, but allowed for them to be searched and reviewed partially, while leaving much to the original that needed to be looked through to understand the bigger, more accurate picture. The decision came as no surprise to this writer, as Google Books is nothing more than that, yet still very useful for those seeking to find a snippet of information or a factoid. Whether the matter will go to the Supreme Court remains to be seen, but the Authors' Guild has promised to take the matter further, and this writer will await the granting (or denial) of certiorari by the Supreme Court with interest.

Source: IPKat

06 October, 2015

No Cause for Celebration - Happy Birthday To You Deemed to be Out of Copyright

Birthdays are a peculiar phenomenon when fully dissected and thought through, yet they evoke an image of youthful bliss and happiness, along with often copious amounts of presents and sugary foods. Almost every language and culture celebrates birthdays (bar some religions etc.), and wishing someone a happy birthday can be as colorful and varied as the cultures themselves. A big part of Western birthday traditions is the song "Happy Birthday to You" (and other regional variants thereof), which has been held under lock and key by Warner/Chappel Music, and as discussed over two years ago on this very blog, the saga challenging its copyright protection has been a long and arduous one. The case has since reached its newest milestone, which will be cause for celebration for many, and a loss for the few.

For the uninitiated, the case of Rupa Marya v Warner/Chapell Music Inc dealt with the aforementioned song "Happy Birthday to You", which was created by the Hill sisters, Mildred and Patty, in the late 1800s (although only in melody). Their original song, "Good Morning to All", featured the melody we associate with the above song, however the lyrics were only changed some time after the publication of Good Morning to All in a collection of songs by Clayton Summy, who had acquired the rights to the song in the 1890s. The author of the lyrics to Happy Birthday to You is largely unknown. Rupa Marya, as a part of a class-action lawsuit, asserted that Warner/Chappell did not own the copyright in the song, and that "...they should be compelled to return the “millions of dollars of unlawful licensing fees” they have collected by wrongfully asserting copyright ownership in the Happy Birthday lyrics".

The first consideration for the District Court for the District of Central California was whether the copyright in the lyrics to the song actually vested in Warner/Chappell. As the acquisition and transfer of the rights to Good Morning to All, and the creation of the lyrics to the derivative work Happy Birthday, remained unclear, the Court had to discern whether the rights to the work vested in their alleged owner (i.e. who wrote the song Happy Birthday), and if so, whether they were correctly assigned onwards affording Warner/Chappell enforceable rights to the song.

Warner/Chappell had very little to celebrate after the decision
In determining the ultimate author of the song, judge King saw that, even though claiming so under oath in a deposition, Patty Hill had not written the lyrics, as several other authors either directly or indirectly had claimed to have done so, and very little evidence illustrated that Patty Hill had concretely written them. Also, under old US law, an author could lose their rights in a word if they publish it before seeking proper registration or publishing it without proper notice, effectively forfeiting their federal and state common law rights. Judge King saw that, in the absence of authorized publication of the song, the defendant had not divested their rights through publication. Although claimed, the court did not find that the lyrics had been abandoned by Patty Hill, even though evidence was put forth to this effect, as the hearsay evidence provided was non-conclusive. As no author was clear, the motion was denied and the Court moved onto the question on ownership of the rights.

The main focus of the case was then the transfer of the rights to Mr. Summy by the Hill sisters in 1934. Through two separate agreements, neither of which has survived from their drafting in the 1930s, the defendant alleged that it had indeed transferred the rights to the lyrics to Mr. Summy. The Court rejected their arguments, and saw that the only transference that had occurred was for the piano melody of the song Good Morning to All, with no reference to the lyrics or the derivative work Happy Birthday to You being a part of either agreement. Judge King therefore concluded that the rights to the lyrics for the song Happy Birthday to You had not been transferred to Mr. Summy, and ultimately to Warner/Chappell Music. The case leave the ownership of the copyright for the song in doubt, potentially causing for the song to fall into the public domain before the end of its copyright term.

The case shows an important facet of copyright and intellectual property, the importance of the chain of evidence. Should there have been concrete provenance of a transfer of rights, the rights in the lyrics to Happy Birthday would have vested in Warner/Chappell Music. In the end, the uncertainty in evidence and the inception of the lyrics to the song left them with very little recourse to protect their rights, and lost them as a result. No repayment of license fees was discussed by judge King; a point that might be contested in court some time in the future. Whether Warner/Chappell will appeal remains to be seen, but this writer doubts the likelihood of this.

Source: The Guardian

16 September, 2015

Retrospective - Incidental Inclusion of Copyright Protected Material

Not all infringement is necessarily wilful or intended, whether it is accidentally sharing a copyright protected image to a wider audience when it was intended to be shared to simply a small audience (albeit still, arguably, infringing copyright) or including works in your own that were not duly licensed as a matter of omission. As such the law does exclude liability for potential accidental inclusion, protecting those who have not intended to infringe copyright, but nevertheless have done so. How the law protects those who've incidentally included material in their works has been unclear due to the ambiguity of the provision in the Copyright, Designs and Patents Act 1988, but more clarity was shed on the provision in the early 2000s by the Court of Appeal.

The case dealing with incidental inclusion was Football Association Premier League Ltd & Ors v Panini UK Ltd, which dealt with collectible football stickers; a staple in many persons' youths (although this writer was more of the ice hockey disposition). Panini sold stickers, along with an album that you could collect them into, within the UK. The sticker collection comprised of nearly 400 football players from the English Premier League and other leagues, and the images used in the stickers contained the player wearing their respective club shirt. In many pictures the clubs' logos are fully visible, also sometimes including the Premier League logo on the sleeve of the football shirt. After a licence was issued to Topps Europe Limited (a tendering process that Panini was involved with) they created a similar sticker collection and accompanying album, and the Premier League too Panini to court for copyright infringement in relation to the club logos and the Premier League logo.

The main focus of the case was on whether Panini's inclusion of the logos in their stickers was copyright infringement, or whether it was protected under section 31 of the Copyright, Designs and Patents Act 1988. The provision allows for a finding of non-infringement in the event of a work's "...incidental inclusion in an artistic work, sound recording, film or broadcast"; however, what exactly amounted to an 'incidental' inclusion was uncertain.

Several draft stickers were rejected for good reason
Lord Justice Chadwick saw that the determination of whether a work does or does not infringe copyright has to be made "...considering the circumstances in which the relevant artistic work... was created". The circumstances would involve the relevant artist's mindset and potential reasons for the inclusion of a potentially infringing work in their work, as well as both commercial and aesthetic reasons for its inclusion. Emphasis is placed on the why, which undoubtedly will take into account any inclusions that are done merely feigning an incidental inclusion, when the true reason was to benefit from its inclusion.

In concluding the case Lord Justice Chadwick saw that, as the reason for the inclusion of the relevant club shirt was to make the images, and therefore the stickers, the most attractive to a would-be collector, it would be important for the shirts to be authentic and contain all logos. Due to this their inclusion could not have been purely incidental, as the objective of the images was to display the logos, although not prominently, but visibly enough for an informed collector to note them. His promptly then dismissed the appeal by Panini.

As can be seen incidental inclusion is by no means a straightforward assessment using bright line rules, but involves a more nuanced, objective assessment of a potentially infringing work's inclusion. Should the Premier League logo just have been present in an on-field advertising board in the background, or on a truck outside, arguably its inclusion would have been incidental. The reason why they were in the image was to give an aura of legitimacy, value and to effectively identify each player, team and league in the sticker set. Incidental inclusion doesn't come up often in IP, and this writer would love to see it applied in an Internet context somehow.

07 September, 2015

A Feast for the Eyes - Food Porn Banned in Germany?

Since the emergence of Instagram and other similar social networks, the power and marketability of pictures, especially of food, has sky-rocketed. This writer fondly remembers a time when he could go to a restaurant without having his friends take pictures of everyone's untouched dishes before tucking in. Alas, those days are gone, and with highly shared pictures comes a great deal of free marketing for the restaurants or eateries featured in those pictures. In other words, as Dominique Crenn, Chef de Cuisine at Atelier Crenn, put it: "Instagram came to give a voice to chefs and to the food they serve". An increase in sales or reservations can make or break a smaller establishment, while providing more established restaurants the financial boost they need among a more focussed, discerning consumerscape, and these images can be the difference between notoriety or infamy. Many would want to control this projected image, so could you exert ownership on photographs of your dishes?

In a somewhat interesting turn of events, albeit some 2 years ago, the German courts extended copyright protection to 'applied arts' under Directive 98/71/EC on the legal protection of designs in case I ZR 143/12 (press release on the decision in German here). This, according to many news outlets, covers food or plate arrangements, so long as they are not merely trivially thrown on the plate, but have an "advanced level" of design to them. This would entail more thought, and clearly is intended to cover those dishes that reflect a more artistic, sensual experience (for the eyes).

Floyd's pièce de résistance: the sad sandwich
As with many other types of artistic works, some dishes can exhibit a great deal of thought, ingenuity and planning, and this writer does appreciate a possible need to protect them under law. Even so, the enforcement of the new German law would be difficult, as many chefs would not sue those seeking to merely spread the name and design of their restaurant's dishes; however, should they want to keep new dishes or experience under wraps from the general public this route would seem much more attractive.

Under UK law it would be difficult to argue a case for the protection of food porn. Under the Copyright, Designs and Patents Act 1988, sculptures enjoy protection as artistic works under copyright. Should a chef make a particularly sculpture-esque food presentation, it would be possible for it to be argued as protectable under copyright, but with the caveat that the food sculpture would have to retain its artistic merit outside of just being sustenance. Similarly in the US their copyright legislation allows for the protection of sculptural works, so far as "...such design incorporates... sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article". This would mean that the sculptural aspect, i.e. the artistic features of the food piece, would have to exist outside of the food or its purpose (to nourish or to be enjoyed taste wise); a fact that would be difficult, albeit not impossible, to prove.

As one can see the protection of food porn is very difficult, even borderline impossible within the common law sans any major changes in the law. One could say this is the correct approach, since the design or food porn quality of any given dish is purely transient; an aspect of visual enjoyment prior to the consumption of the food, and intrinsically a part of the process of enjoyment in conjunction with the taste and feel of the item. Pictures of food are an important aspect of modern marketing, but it will be some time till protection is afforded to something more than the image of the dish.

Source: Eater

24 August, 2015

Music Lost - The Beatles, US Fair Use and Estoppel in the UK

The music industry is a hugely cut-throat business, with the 'little guy' often being dominated by the big companies that control the market and access to the more lucrative avenues within that industry. Due to this drastic imbalance contracts can often be one-sided, take it or leave it types of negotiations, which can lead to contracts, or negotiations for those contracts, that are waged with mainly the interest of the record company as the vocal point. A very interesting case discussing the relationship with UK & US law, utilizing the latter as a fair use defense in the former, and bringing forth an argument on promissory estoppel in relation to contractual negotiations was handed down by Justice Arnold early last month. This writer, in shame, will admit he has not gotten around to discussing the case as promptly as he wanted, but decided it was high-time to address this case in more detail.

The case in question is Sony/ATV Music Publishing LLC v WPMC Ltd, which dealt with the Beatles' first concert on US soil, performed at the (now defunct) Washington DC Coliseum in February 1964. The concert was filmed, although with a very low production value, subsequently being shown in movie theaters across the country to capitalize the new Beatlemania sweeping the country. Through a complex set of events the defendant, Iambic, acquired a copy of the video of the concert, which was then passed onto Iambic's successor WPMC after Iambic went bankrupt. Christopher Hunt, who was the director and sole owner of both Iambic and WPMC, wanted to make a documentary based on the concert footage and sought a licence from the copyright holder to the Beatles' music, Sony/ATV. After long negotiations no license agreement was finalized, but a preliminary version of the documentary was made by Mr Hunt, and advertised on a website for the UK market. Sony/ATV found the website and took Iambic (and then WPMC) to court for copyright infringement.

The Beatles; an outfit of curiosity even for newer generations
The first issue in the case was a rarity in the world of IP; whether a contract had been concluded and if not, whether Sony would be still held to it through proprietary estoppel in their representations that Mr Hunt had relied on. During the negotiations for a synchronization license, emails exchanged between the parties were always headed "SUBJECT TO CONTRACT" or a similar wording, implying that no final contractual relationships have been concluded no matter what the content of the emails themselves. Although Sony/ATV had nearly agreed to a license with Mr Hunt, even concluding some emails with the sentence "...[I am] pleased to advise that I have now received approval for the following non-exclusive use"; however these 'agreements' were made with reservations, such as seeing the final documentary prior to accepting the license for the documentary.

Through their communication, viewed as a whole, Justice Arnold. who presided over the case, saw that no contract had been concluded. As all communication was headed as "subject to contract", which clearly indicated to both parties that no contract had been set pending certain agreed upon terms. This was important as to the estoppel claim, as there could be no reasonable reliance due to this express wording within the communication. Had the above phrasing not been included there potentially could have been a claim under estoppel.

Finally, Justice Arnold had to settle the issue of fair use under US law. As discussed previously on this blog, US fair use is an assessment of four factors (under 17 USC § 107): (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

As the documentary is a commercial work, it would have to be transformative in nature (i.e. adding something new with a different purpose of character) to benefit from fair use under the first factor. Due to the inclusion of the concert in its entirety, and a small amount of commentary accompanying it, Justice Arnold deemed the work to be only partly transformative.

The second factor was agreed upon by all parties as being an expressive work falling under the remit of copyright, adding to a possible finding of a lack of fair use.

Under the third factor, as the use of the copyright material was substantial (as the whole work was used) Justice Arnold did not agree that the use was within reasonable limits. The aim of the documentary could have been achieved by using less, which WPMC did not do, and therefore was a substantial copying in the light of fair use.

Finally, even in the absence of submitted evidence, Justice Arnold saw that the documentary could usurp the market for the copyright holder, as they could have very well used the footage to create a documentary of their own. As there might be a market for audiovisual works of the Beatles (with this writer thinking there definitely is), the documentary would also replace the provision of those types of works from the copyright holder, depriving them of the benefit of the audiovisual works. Also, Justice Arnold decided that, as there is a clear market for synchronization licenses, the market for those licenses would be damaged, as they would not necessarily be sought if one is not needed in all instances. He then concluded with a finding of no fair use.

Ultimately Sony/ATV succeeded in their infringement claim; however, the case is still pending in the US, and whether a different finding there would change the nature of the case remains to be seen. One would imagine the decision will be appealed, and this writer would be curious to see proprietary estoppel to be challenged higher up in the UK courts.

Source: IPKat

10 August, 2015

Tweets Stolen - Further Thoughts on Tweets and Copyright

The impact of social media on today's social interaction is undeniable, with people turning to Instagram, Facebook and Twitter for more and more of their entertainment, social and news needs. As this new interaction space has grown, and seemingly keeps growing, the value of the content within it has grown as well. This writer recently noted newly emerged discussion surrounding Twitter and reusing jokes and/or content lifted from Tweets, especially in the light of having discussed this on a very superficial level some time ago, I thought it merited expanding more in detail.

In a recent development it has come to light that Twitter hides certain tweets it deems to be infringing copyright, pending a response from the copyright holder as to their respective fates. This is expanded on in Twitter's Copyright and DMCA Policy: "Twitter will respond to reports of alleged copyright infringement, such as allegations concerning the unauthorized use of a copyrighted image as a profile photo, header photo, or background, allegations concerning the unauthorized use of a copyrighted video or image uploaded through our media hosting services, or Tweets containing links to allegedly infringing materials". One has to note that, although the policy does focus on images and videos, it does leave its definition of "copyright infringement" as open-ended, potentially catching tweets themselves.

This begs the question, is a tweet protected by copyright? As discussed in my previous article, the UK Copyright, Designs and Patents Act 1988 does not set a limit on what can amount to a copyright protected literary work, which allows for even tweets to be potentially protected under the provision. As long as the work originates from the author and contains a certain level of originality. The ECJ decision in Infopaq International A/S v Danske Dagblades Forening further elaborated on what amounts to originality, with the court deciding that a work is protected by copyright if it is "...the expression of the intellectual creation of [the] author". So long as you have put in effort and some level of choice and creativity into your work, even a tweet, it would arguably be protected by copyright within the UK and the EU, irrespective of the tweet's length (140 characters or fewer).

Twitter can be serious business
In the US things can potentially be a little different. Under 17 USC section 102 copyright protection extends, much like in the UK, to literary works. The provision itself does not prescribe any length requirements no works for copyright to be applicable, and section 101 offers no further assistance in answering the above question. The Electronic Code of Federal Regulations aids somewhat, as section 202 of the Regulations stipulates that works that will not (necessarily) be protected by copyright are "[w]ords and short phrases such as names, titles, and slogans" - although, the CFR merely sets these out as examples, not definitive limitations. Whether a tweet would count as a "short phrase" and therefore is not protected would remain an assessment of its creativity (as was discussed in Arica Institute Inc v Palmer, for example), as if the phrase exhibits a minimal amount of creativity, it would arguably be protected by copyright in the US.

As can be seen Twitter and tweets do pose a challenge to copyright and whether its protection extends to them within the common law. Although literary works are nearly universally protected all over the world, their length and specific content does dictate the protection afforded, especially when its creativity or originality comes into question. One big consideration is the monetization of tweets and whether they would ever merit protection to the point where they would be challenged in court. This writer would love to see a tweet or a series of tweets be evaluated by the courts at some point, but heavily doubts the likelihood of this ever happening. Without judicial consideration one can still very much appreciate the creativity of tweets and their content, as the character limitations present a unique obstacle to comedic delivery; something when achieved can be powerful.

Source: The Verge

04 August, 2015

Icons Gone - Photography of Landmarks to be Prevented Through Copyright?

Memories are an important part of life, especially when it comes to travels to far-away lands or places, filled with culture, icons and landmarks that dot human history's timeline. As an avid traveler, this writer has taken his share of photos, both digital and of the physical, film variety, and often looks back at them with fondness and nostalgia. Pictures also form a part of the fabric of visual heritage of different cultures, and their importance cannot be overstated. Nevertheless, as a part of the InfoSoc Directive's implementation report, specifically relating to Article 5 of the Directive, any EU Member State could introduce restrictions to rights conferred in Articles 2 and 3 of the Directive.

To expand on this a bit more, the Freedom of Panorama enables individuals to take pictures of sculptures or other permanent installations and publish them without a need to consult the original creator or architect to do so. Currently the legal landscape for Freedom Of Panorama is very scattered, with some countries in the EU allowing all uses of such pictures (some with certain limitations, such as non-commercial use), while others, such as France and Italy, allow for no publication of images of this nature. Arguably the ability to publish one's vacation photos should be a 'right' in itself, with potential restrictions on commercial utilization being a viable option (although, one can imagine, costly to enforce effectively).

Frank was a savant in monument photography
In the proposed amended report put forth by Julia Reda (with the initial report discussed on this very blog here) Freedom Of Panorama was curtailed somewhat, as a recommendation set forth that "...the commercial use of photographs, video footage or other images of works which are permanently located in physical public places should always be subject to prior authorisation from the authors or any proxy acting for them". Ms Reda's initial report had a very different view, proposing that photographs of such places would always be permitted. This writer would promote striking a balance between the allowance of sharing photographs with their commercial utilization with no licence contribution. Arguably, enforcement and ensuring that all images were actually taken for the commercial purposes would be challenging, and potentially nigh impossible, yet it still remains an important consideration in this context. People should be able to share their vacation photos with no need to seek permission, but should not be able to sell those images as postcards, for example, willy-nilly.

The measure has since been rejected, which is a great development; however, one has to note that the resolution is non-binding, potentially leaving the door open for the restriction of Freedom Of Panorama in the future. This writer doubts any substantial restrictions would ever be introduced, and even if they would be, their enforcement would be their downfall. Online services like Facebook and Picasa would have to restrict the displaying of photos that would infringe on this potential provision, bearing the brunt of the enforcement of any takedown notices from subsequent rights' holders.

This discussion surrounding the Freedom of Panorama highlights the persisting importance of copyright in everyday life, even regarding mundane, more obvious 'rights'. Should a restriction be implemented monuments around the world would probably have stewards requesting payment after a photograph is taken, affecting the magic of amazing sights that people have wanted to see on their journeys. Nevertheless, as the measure has been rejected it seems highly unlikely, but this writer will follow any developments with interest.

Source: The Times

17 July, 2015

Online Blasphemy - YouTube Wins Round Two of Performance Right Kerfuffle

After the decision in Garcia v Google (discussed on this very blog here) last year the question of whether an actor (or actress) has a copyright interest in their respective performance, no matter how short, has been debated hotly. The decision was appealed, and the Court of the Ninth Circuit decided to hear the matter again en banc; a decision that many of us involved in IP have waited for with anticipation. The decision was finally handed down nearly two months ago, and this writer, in shame, only now had time to discuss the case.

For the uninitiated Garcia v Google dealt with a low-budget independent movie called "Desert Warrior", in which Ms. Garcia appeared. Post filming the title and narrative of the movie was drastically changed, finally being called the "Innocence of Muslims"; a movie that arguably was quite blasphemous and offensive towards those of the Islamic faith. Ms. Garcia's appearance was a brief 5 second clip, and her performance was dubbed over in post-production. The movie incited violence and disapproval in the Middle East, with Ms. Garcia also facing several death threats as a result of her appearance in the movie.

The main crux of the case lies in Ms. Garcia's claim in a copyright interest in her performance, allowing for an injunction to be issued against Google for the movie's broadcast on their YouTube platform (and potential other platforms as well). This injunction was issued at first instance.

The Court raised the alarm right from the start, stating that "...Garcia’s theory of copyright law would result in... splintering a movie into many different “works,” even in the absence of an independent fixation", or in other words, every actor or actress in a given movie would have a copyright claim in it. Also, Ms. Garcia's part in the movie would fall under the work-for-hire doctrine, which passes on the copyright interest to the employer, leaving her with no copyright claim in the work. Ms. Garcia did not, as a final barrier to her copyright claim, fix her work in any tangible form; a requisite element under copyright in the United States for an interest in the work to arise. Through the Court's rationale, albeit quite aggressive as such, Ms. Garcia's claim was quickly dissected and dismissed and she was deemed to have no copyright claim in the work.

Free speech online; a precious commodity
Finally, the Court addressed Ms. Garcia's claim under irreparable harm. Her claim does not manifest itself through any tort-based cause of action, but through copyright and her interest in the work as an author. The Court did have sympathy for Ms. Garcia, but her action was rotten at the root, as the Court described: "This relief is not easily achieved under copyright law. Although we do not take lightly threats to life or the emotional turmoil Garcia has endured, her harms are untethered from -and incompatible with - copyright and copyright’s function as the engine of expression". One has to agree with the Court's judgment, as rightfully so copyright protects expression and not human life or its safety. While one has to appreciate that the movie has brought a significant amount of distress to her, and as such those problems should be addressed, but the way to address them is not through copyright. In the end, her claim failed under irreparable harm, as no harm was caused to the work or her claimed interest in the work as an author.

Judge Kozinski, who gave the judgment at first instance, handed down a dissenting judgment, as he saw there indeed was a claim under copyright in Ms. Garcia's small part in the movie. Through his Honor's argument, Ms. Garcia's claim stems from the acting itself, and its fixation on film. Without this, in judge Kozinski's mind "[i]f Garcia’s scene is not a work, then every take of every scene of, say, Lord of the Rings is not a work, and thus not protected by copyright, unless and until the clips become part of the final movie". This writer, in his humble opinion, argues against judge Kozinski here, as the mere recording of an actor or actress does not necessarily create a 'work' unto its own under copyright. Should one follow this logic the movie in question could consist of hundreds, if not thousands of distinguishable works, which would lead to copyright being untenable in the film industry.

Judge Kozinski further argues that Ms. Garcia has an interest as an author, and thus should be protected from irreparable harm. Although, under precedent, an author does not themselves have to affix the work to be considered as such, an actor or actress plays no part in the fixation of a work, but merely act as a part of its fixation for another. This does not create an interest as an author, or a separate author within one work. As she is not an author she cannot face irreparable harm, even if her life is at stake, as his Honor points out at the end of his dissenting judgment.

Overall the case has been a very interesting one, and whether it goes on further remains to be seen; however, this author does not see a need for it to go beyond its current route. Whether Ms. Garcia has a copyright interest in the work is, at least arguably, an equivocal no, and her case, although very serious in nature, would create an overreaching right in copyright beyond its intended purpose.

Source: BBC News

07 July, 2015

Coffee Shop Conundrum - ECJ Set to Decide on Free WiFi and Third Party Liability

In a time when the internet is nearly always with us, be it in a smartphone, a laptop or other smart devices, you often taken things for granted such as free WiFi. For many travelers it has saved their behinds from being lost, out of money, or in some unfortunate cases, even potential harm, and many of us in bigger cities like London can easily overlook the need for WiFi. But, as Uncle Ben framed it so eloquently: with great power (i.e. Internet connectivity) comes great responsibility. People can be inconsiderate, and at times outright indifferent, to potential liability issues in using other peoples' or organizations' free WiFi, which begs the question: can a third-party be liable for possible infringement on their wireless network?

The answer to the question possible lies in the forthcoming decision of McFadden, faced by the European Court of Justice later this year (this writer hopes). The case, refereed to the ECJ from the Regional Court of Munich (decision in German can be found here), concerned a store owner, Toby McFadden, in Germany who's store specialized in light and acoustic engineering services. To further promote the store and its offerings the owner allowed potential customers to freely access a WiFi connection, with no password protection included. An unknown user used this free network to upload and share an infringing song on an online file-sharing platform, and Mr. McFadden was subsequently sued by Sony Music who argued he is liable for the infringement (among other things) that occurred on his unprotected network.

The case does bring forth several questions concerning Article 12 of Directive 2000/31/EC, more commonly known as the E-Commerce Directive. Although each of the questions merits an assessment in their own right, for the sake of brevity this writer shall endeavor to answer the question above, at least in the light of Article 12.

Wifi can cause some degree of envy
What Article 12 seeks to protect are service providers, or in other words 'mere conduits', who provide a service such as free WiFi, should they remain largely hands-off of the provision of that network (i.e. don't cherry-pick the users accessing the network, don't initiate the transmission of information or alter what is received in some way). This, however, cannot be a service for which the provider is remunerated, per Recital 18 of the Directive, and aims to facilitate the better sharing and access of information within the European Community.

This writer will freely admit his lack of knowledge in German law, but proposes to give a perspective from the UK side of things. Pinsent Masons in their Out-Law blog have set out that, per German law, individuals have to secure their internet connections through reasonable means, such as a password, to avoid liability should a third-party use their connection for nefarious purposes; however, this standard does not extend to commercial entities, which the case aims to settle.

Under the Copyright, Designs and Patents Act 1988 the High Court has the capability to issue an injunction against a service provider, provided that the "...service provider has actual knowledge of another person using their service to infringe copyright". What this has been interpreted in Twentieth Century Fox Film Corp & Ors v British Telecommunications Plc to encompass is true knowledge of one or more infringers using the provided network to do so, and the more detail of knowledge or facts given to the service provider (notices etc.) the less protection the provision offers to them. One could argue that a lack of password protection would not in itself give rise to an actual knowledge of possible infringement, as users, even if filtered through via password protection, could still abuse the network without the knowledge of its provider.

Whether Mr. McFadden was brazenly aware of the infringing acts being committed on his network is unknown to this writer, and he awaits the decision of the ECJ with some interest. Voices have been raised in the protection of open networks and access thereto by entities such as the Electronic Frontier Foundation, and one must agree with them to a certain extent. The 'locking down' of networks does provide a more cumbersome regime through which information and the Internet can be accessed, but one still does have to keep in mind the protection of legitimate rights within that space. What the ECJ decides will undoubtedly have ramifications on our WiFi networks, but one can imagine they'll only remain a login away.

Source: JDSupra